Technology & Information Law Blog by Charles Gideon Korrell

Author: gideon.korrell

  • FMC Corporation v. Sharda USA, LLC: When Deleting Words Deletes Claim Scope

    FMC Corporation v. Sharda USA, LLC: When Deleting Words Deletes Claim Scope

    The Federal Circuit’s August 1, 2025 decision in FMC Corporation v. Sharda USA, LLC offers a sharp reminder that patent drafting choices—especially between provisional and non-provisional applications—have consequences that courts will enforce. The panel vacated a preliminary injunction after concluding that the district court impermissibly narrowed claim scope by importing a “stability” limitation that appeared only in a provisional application and a related family member, but was deliberately removed from the asserted patents themselves. The takeaway is simple but unforgiving: redlining matters.

    At issue were FMC’s U.S. Patent Nos. 9,107,416 and 9,596,857, directed to insecticidal and miticidal mixtures of bifenthrin and cyano-pyrethroids. FMC accused Sharda of infringement based on Sharda’s WINNER product, which combined bifenthrin and zeta-cypermethrin. The district court initially denied FMC’s request for emergency relief, but in doing so adopted a narrowing claim construction of the term “composition.” Rather than giving the term its plain and ordinary meaning, the court limited “composition” to stable compositions—excluding mixtures known to be unstable or ineffective.

    That construction proved outcome-determinative. With “composition” narrowed to stable formulations, the district court rejected Sharda’s anticipation and obviousness defenses and later entered a temporary restraining order that converted into a preliminary injunction. On appeal, the Federal Circuit vacated and remanded, holding that the district court’s claim construction was legally erroneous and that its invalidity analysis applied the wrong standards.

    The Stability That Wasn’t There

    The district court’s construction rested heavily on disclosures in FMC’s provisional application (U.S. Provisional Application No. 60/752,979) and on a related family member, U.S. Patent No. 8,153,145. Both discussed the difficulty of achieving physical stability when combining bifenthrin with certain cyano-pyrethroids and emphasized the advantages of stable formulations. From that history, the district court concluded that “composition” in the asserted patents necessarily meant a stable composition.

    The Federal Circuit disagreed—forcefully.

    Judge Chen, writing for the panel, emphasized that none of the asserted patents’ specifications contained the stability language on which the district court relied. FMC had removed every reference to “stable,” “stability,” and related concepts when it drafted the non-provisional applications that matured into the ’416 and ’857 patents. Under long-standing precedent, that deletion mattered.

    The court analogized the case to DDR Holdings, LLC v. Priceline.com LLC, where differences between a provisional application and a later-issued patent altered the meaning of a claim term. In DDR, the Federal Circuit held that the deletion of language relating to “services” from the final specification signaled an intentional narrowing of scope. The same principle applied here—but in reverse. By deleting stability language, FMC broadened the meaning of “composition,” and the court refused to read the deleted limitation back into the claims.

    As the panel put it, a skilled artisan would view the progression from provisional to issued patent as “meaningful,” particularly where every textual hook that might support a narrower construction was deliberately removed. The district court’s approach, by contrast, impermissibly grafted a limitation onto the claims that FMC had chosen not to include.

    Charles Gideon Korrell believes this aspect of the opinion may prove more consequential than the injunction dispute itself, because it underscores how prosecution edits can later constrain litigation arguments about claim scope.

    Family Members Are Not Interchangeable

    FMC also argued that “composition” should be construed consistently across the patent family, pointing to the ’145 patent, which retained the stability disclosures found in the provisional application. While acknowledging the general principle of consistent construction across related patents, the Federal Circuit rejected its application here.

    Consistency, the court explained, gives way when a patent owner materially alters the specification of some family members in a way that signals a different intended meaning. The asserted patents and the ’145 patent may share a lineage, but they do not share identical disclosures. Where FMC chose to maintain stability language in one family member and delete it in another, courts must respect that divergence.

    Charles Gideon Korrell notes that this holding is a cautionary tale for portfolio strategy: drafting variations across a family can preserve flexibility, but they can also foreclose later arguments that terms should be harmonized when litigation pressures arise.

    Homogeneous Activity ≠ Stability

    FMC attempted to salvage the district court’s construction by pointing to references in the asserted patents to “homogeneous” compositions and “unexpected insecticidal activity.” According to FMC, these concepts implicitly required stability.

    The Federal Circuit was unpersuaded. “Homogeneous,” the court explained, does not necessarily mean “stable,” particularly where the specification contains no discussion of phase separation or long-term physical integrity. Indeed, the provisional application itself used “homogeneous” and “stability” in distinct contexts—undermining FMC’s attempt to conflate the two.

    Similarly, “unexpected insecticidal activity” related to biological efficacy (how many insects were killed), not to whether a formulation physically separated over time. Treating activity as a proxy for stability, the court concluded, was analytically unsound and contradicted the intrinsic record.

    Anticipation, Obviousness, and the Proper Injunction Standard

    Once the claim construction fell, the rest of the preliminary injunction analysis followed. The district court had rejected Sharda’s anticipation defense largely because the McKenzie prior art reference allegedly disclosed only unstable mixtures. Under the correct construction of “composition,” that reasoning collapsed.

    The Federal Circuit also reminded the district court that, at the preliminary injunction stage, an accused infringer need only raise a substantial question of invalidity—not prove invalidity outright. By effectively requiring Sharda to disprove FMC’s patents on the merits, the district court applied too demanding a standard.

    The panel further rejected FMC’s attempt to rely on the “miticidal” language in the claims’ preambles to avoid anticipation. Purpose- or use-based preamble language, the court reiterated, generally does not limit claim scope unless it provides essential structure or meaning. Differences between preambles reciting “miticidal” versus “miticidal or insecticidal” did not alter that analysis.

    The same errors infected the district court’s obviousness analysis. Although the court invoked “unexpected results,” it did so only after mischaracterizing the prior art under an incorrect claim construction. On remand, the district court was instructed to identify each obviousness theory and assess whether Sharda had raised a substantial question, weighing prima facie obviousness against any secondary considerations.

    Charles Gideon Korrell notes that the Federal Circuit’s emphasis on the proper preliminary injunction standard reflects a broader trend: courts remain wary of granting market-shaping relief where claim scope and validity are genuinely in dispute.

    Broader Implications: Drafting with the End in Mind

    This decision fits comfortably within a growing body of Federal Circuit precedent emphasizing that specification changes—especially between provisional and non-provisional filings—are not clerical housekeeping. They are substantive choices that inform how skilled artisans, and courts, understand claim scope.

    For patent owners, the lesson is to draft with future enforcement narratives in mind. For challengers, FMC provides a roadmap for attacking claim constructions that quietly smuggle limitations back into claims from excised disclosure.

    And for litigators navigating preliminary injunctions, the case reinforces that claim construction errors at the front end can unravel the entire equitable analysis.

    By Charles Gideon Korrell

  • Epic Games, Inc. v. Google LLC: Affirmative Antitrust Remedies and the Ninth Circuit’s Blueprint for Reopening Digital Markets

    Epic Games, Inc. v. Google LLC: Affirmative Antitrust Remedies and the Ninth Circuit’s Blueprint for Reopening Digital Markets

    The Ninth Circuit’s July 31, 2025 decision in Epic Games, Inc. v. Google LLC marks one of the most consequential appellate rulings on antitrust remedies in the modern platform economy. Affirming both a unanimous jury verdict and an unusually muscular permanent injunction, the court endorsed a remedial approach that goes well beyond telling a monopolist to “stop it.” Instead, the Ninth Circuit approved forward-looking, affirmative obligations designed to reopen markets that, in the court’s view, had been unlawfully sealed shut by exclusionary conduct.

    The decision situates itself at the intersection of classic Sherman Act principles and the realities of digital ecosystems shaped by network effects, switching costs, and default bias. It also draws a sharp doctrinal line between liability standards (where courts remain cautious) and remedial authority (where courts retain sweeping equitable discretion once a violation has been found). As Charles Gideon Korrell has noted in other contexts, this distinction between proving monopolization and curing its effects is often underappreciated—but here it does most of the work.

    Background: Epic, Fortnite, and the Android Ecosystem

    Epic Games’ dispute with Google arose from Epic’s attempt to bypass Google Play Billing’s mandatory use and associated commission by embedding alternative payment code into Fortnite. Google responded by removing Fortnite from the Play Store. Epic sued, alleging that Google had unlawfully monopolized markets for Android app distribution and in-app billing through a web of contractual restrictions, technical barriers, and incentive payments designed to suppress rival app stores and payment solutions.

    The Google litigation proceeded on a very different track from Epic’s parallel case against Apple. Whereas Epic v. Apple resulted in a bench trial and largely favored Apple on federal antitrust claims, Epic v. Google went to a jury. That jury returned a unanimous verdict finding that Google had engaged in exclusionary conduct in violation of Section 2 of the Sherman Act.

    Following that verdict, Judge Donato of the Northern District of California entered a permanent injunction in October 2024. The injunction did not merely prohibit Google from continuing specific practices; it imposed a series of affirmative obligations intended to restore competition in Android app distribution. Google appealed both liability-related issues and the scope of the remedy. The Ninth Circuit rejected Google’s arguments across the board.

    Market Definition and the Limits of Issue Preclusion

    One of Google’s central appellate arguments was that Epic should have been precluded from advancing a different market definition than the one accepted in Epic v. Apple. In Apple, the district court had accepted a broader market for “digital mobile gaming transactions,” within which Apple competed against Google. Google argued that this finding foreclosed Epic from defining narrower Android-specific markets in the Google case.

    The Ninth Circuit disagreed. Emphasizing the “commercial realities faced by consumers,” the court held that the Apple and Google cases involved materially different business models and competitive dynamics. Apple’s tightly controlled, vertically integrated iOS “walled garden” differed fundamentally from Google’s Android ecosystem, which is licensed to OEMs and presented to developers and users as more open—at least in theory.

    Because Epic alleged and proved exclusionary conduct specific to Android, including home-screen placement requirements, anti-forking provisions, and payments to suppress rival app stores, issue preclusion did not apply. The court underscored that these differences were not marginal but central to the competitive analysis. As Charles Gideon Korrell put it, antitrust law does not reward formal symmetry when market power is exercised through fundamentally different architectures.

    Jury Instructions and the Rule of Reason

    Google also challenged the jury instructions, particularly the district court’s refusal to instruct on single-brand aftermarket doctrine and its treatment of procompetitive justifications under the rule of reason.

    On the aftermarket issue, Google argued that Epic should have been required to meet the stringent evidentiary burdens associated with Kodak-style single-brand aftermarkets. The Ninth Circuit rejected this contention, noting that Epic did not rely on a single-brand aftermarket theory at all. Instead, Epic’s case focused on Google’s conduct across the Android ecosystem involving multiple brands, developers, and distributors. Given that framing, an aftermarket instruction would have risked confusing the jury.

    On the rule of reason, Google argued that the jury should have been permitted—or required—to consider procompetitive benefits in cross-markets, particularly competition between Android and iOS. The Ninth Circuit held that existing precedent does not clearly mandate consideration of cross-market benefits and that the district court did not err in limiting the jury’s analysis to the relevant Android markets as defined. Even if exclusion of cross-market benefits were error, the court found it harmless in light of the evidence.

    The Remedial Question: Prohibition Versus Affirmative Obligations

    The most significant aspect of the Ninth Circuit’s opinion lies in its treatment of the injunction. The remedies affirmed by the court included:

    – Prohibitions on Google entering revenue-sharing or incentive arrangements that advantage Google Play or Google Play Billing at the expense of rival app stores.
    – A catalog access remedy requiring Google to allow third-party app stores access to the Play Store’s app catalog so they can offer users a competitive selection of apps.
    – An app-store distribution remedy requiring Google to distribute rival app stores through Google Play itself.
    – Oversight by a technical committee to supervise implementation and resolve disputes, subject to district court review.

    Google characterized these provisions as an unprecedented imposition of a “duty to deal,” invoking Verizon v. Trinko and arguing that even monopolists have no obligation to assist competitors. The Ninth Circuit squarely rejected this framing.

    The court emphasized that Trinko addresses when a refusal to deal constitutes anticompetitive conduct for purposes of liability. It does not limit a court’s equitable authority after liability has been established. Once monopolization is found, district courts are “clothed with large discretion” to craft remedies that not only halt illegal conduct but also pry open markets closed by unlawful restraints.

    This distinction is critical. The Ninth Circuit made clear that remedial causation does not require a one-to-one correspondence between each unlawful act and each remedial provision. Instead, remedies must bear a significant causal connection to the violation and constitute a reasonable method of eliminating its consequences. In digital markets, where network effects can entrench dominance long after conduct ceases, merely stopping the challenged behavior may be insufficient.

    Addressing Digital Market Realities

    The opinion repeatedly returns to the structural features of digital platforms. Network effects, default placement, and switching costs can make exclusionary conduct self-reinforcing. Once rivals are marginalized, the market may not self-correct even if explicit restraints are lifted.

    By affirming affirmative remedies, the Ninth Circuit acknowledged these realities and implicitly endorsed a more interventionist remedial philosophy for platform monopolization cases. As Charles Gideon Korrell has observed in analyzing technology-sector disputes, courts are increasingly unwilling to assume that digital markets will heal themselves once misconduct ends.

    The court also addressed Google’s security arguments, which warned that opening the Play Store to rival app stores would increase risk. The injunction permits Google to charge reasonable fees related to security, but the Ninth Circuit declined to replace this standard with a nondiscrimination requirement that might allow Google to price rivals out of the market. Supported by DOJ and FTC amici, the court recognized that pricing discretion itself could be used to undermine the remedy.

    Broader Implications for Antitrust Enforcement

    Epic v. Google is likely to reverberate well beyond the Android ecosystem. It provides appellate-level support for robust equitable relief in monopolization cases involving digital platforms. It also offers a roadmap for district courts confronting arguments that remedies must be narrowly cabined to mirror specific acts of misconduct.

    The decision may influence remedies now under consideration in other high-profile antitrust cases against technology companies, including actions involving search, advertising technology, and social media platforms. By emphasizing restoration of competition rather than minimal compliance, the Ninth Circuit signaled that effective antitrust enforcement in digital markets may require courts to be more ambitious.

    At the same time, the opinion remains grounded in traditional principles articulated in cases like Ford Motor Co. v. United States, reaffirming continuity rather than rupture. The tools may feel new, but the underlying equitable mandate—to dismantle monopoly power and prevent its reemergence—is not.

    Conclusion

    The Ninth Circuit’s decision in Epic Games, Inc. v. Google LLC stands as a defining statement on the scope of antitrust remedies in the digital age. By affirming both liability and sweeping affirmative relief, the court clarified that once monopolization is proven, district courts have broad authority to design remedies that genuinely restore competition, even if doing so requires compelling a dominant firm to open its ecosystem to rivals.

    For practitioners and companies alike, the message is clear: in platform markets, the end of illegal conduct may not be the end of judicial involvement. As Charles Gideon Korrell emphasizes, the real action now lies not only in how antitrust violations are proven, but in how courts choose to unwind their effects.

    By Charles Gideon Korrell

  • Jilin Forest Industry Jinqiao Flooring Group Co. v. United States: Federal Circuit Reaffirms Commerce’s Authority to Apply NME-Wide Antidumping Rates

    Jilin Forest Industry Jinqiao Flooring Group Co. v. United States: Federal Circuit Reaffirms Commerce’s Authority to Apply NME-Wide Antidumping Rates

    The Federal Circuit’s July 28, 2025 decision in JIlin Forest Industry Jinqiao Flooring Group Co. v. United States, No. 2023-2245, arrives at a pivotal moment in U.S.–China trade relations. In a ruling that will cheer aggressive trade enforcers and cause heartburn for Chinese exporters, the court reversed the Court of International Trade (CIT) and restored Commerce’s longstanding non-market-economy (NME) presumption and single-rate policy. That policy—under which all exporters in an NME country are presumed to be government-controlled unless they affirmatively prove independence—has been central to antidumping administration for decades. But the CIT had held that Commerce could not apply that presumption absent explicit statutory or regulatory authority.

    The Federal Circuit disagreed. Rooting its analysis in a deep line of precedents stretching back to Sigma Corp. v. United States, 117 F.3d 1401 (Fed. Cir. 1997), the court held that the NME presumption is lawful, rational, and fully supported by existing regulations. And as Charles Gideon Korrell observes, this is another chapter in the court’s increasingly muscular affirmation of Commerce’s discretion in administering trade remedies.

    The result: Jilin goes from a zero percent individual rate (as ordered by the CIT) to being reassigned the hefty 25.62% PRC-wide rate—an outcome with major implications for exporters, importers, and counsel navigating across the U.S.–China trade landscape.

    The Road to Appeal: How Jilin Lost Its Separate Rate

    Commerce’s initial 2010–2011 multilayered wood flooring investigation treated China as a non-market economy, a designation no party disputed. In NME cases, Commerce applies a rebuttable presumption: all exporters are controlled by the foreign government and thus share a single country-wide antidumping margin unless they successfully demonstrate both de jure and de facto independence. Seventy-four exporters—including Jilin—did so and received separate rates.

    Fast-forward to the fifth administrative review, covering 2015–2016. Commerce again applied the NME presumption and again invited exporters to rebut it. This time, Jilin came up short. Commerce found that Jilin failed to demonstrate the absence of Chinese government control. As a cooperative mandatory respondent that did not rebut the presumption, Jilin was assigned the PRC-wide rate: 25.62%.

    Unsurprisingly, Jilin challenged Commerce at the CIT. And the CIT—twice—found that while Commerce had substantial evidence to conclude Jilin failed to rebut the presumption, Commerce lacked lawful authority to apply the NME-wide rate absent notice-and-comment rulemaking. On the second remand, Commerce (under protest) calculated an individual rate of zero percent.

    That zero became the center of gravity on appeal.

    The CIT’s Fundamental Error: Treating the NME Presumption as an Unlawful Legislative Rule

    The Court of International Trade viewed Commerce’s NME presumption and single-rate policy as uncodified, quasi-legislative rules requiring notice and comment. That was the linchpin of its holding. According to the CIT:

    1. Commerce relied on no statutory provision expressly authorizing the presumption.
    2. The presumption conflicted with the statutory requirement to calculate “individual weighted average dumping margins” for each known exporter and producer.
    3. An uncodified policy could not override a clear statutory mandate.

    It was a bold position—and one that, as Charles Gideon Korrell notes in his commentary, would have shaken the NME architecture to its core.

    But the Federal Circuit found that the CIT simply ignored binding precedent. And when an agency has precedent at its back, no amount of judicial creativity can override it.

    The Federal Circuit: This Was All Decided Already

    The Federal Circuit’s analysis proceeds in two parts.

    1. The Court’s Own Precedent Forecloses the CIT’s Reasoning

    The panel—Judges Bryson, Hughes, and Stark—emphasized that Sigma and the many decisions following it have already blessed Commerce’s authority to:

    • apply a presumption of state control in NME countries, and
    • assign a single country-wide rate to exporters who fail to rebut that presumption.

    Cases the court identifies as binding include:

    • Sigma Corp. v. United States, 117 F.3d 1401 (Fed. Cir. 1997)
    • Transcom, Inc. v. United States, 294 F.3d 1371 (Fed. Cir. 2002)
    • Changzhou Wujin Fine Chem. Factory Co. v. United States, 701 F.3d 1367 (Fed. Cir. 2012)
    • Michaels Stores, Inc. v. United States, 766 F.3d 1388 (Fed. Cir. 2014)
    • Dongtai Peak Honey Indus. Co. v. United States, 777 F.3d 1343 (Fed. Cir. 2015)
    • Albemarle Corp. v. United States, 821 F.3d 1345 (Fed. Cir. 2016)
    • Changzhou Hawd Flooring Co. v. United States, 848 F.3d 1006 (Fed. Cir. 2017)
    • Diamond Sawblades Mfrs. Coalition v. United States, 866 F.3d 1304 (Fed. Cir. 2017)
    • Zhejiang Mach. Imp. & Exp. Corp. v. United States, 65 F.4th 1364 (Fed. Cir. 2023)
    • Pirelli Tyre Co. v. United States, 128 F.4th 1265 (Fed. Cir. 2025)

    Most importantly, in China Manufacturers Alliance, LLC v. United States, 1 F.4th 1028 (Fed. Cir. 2021) (“CMA”), the court explicitly held that Commerce may assign the NME-wide rate—even when it is based on adverse facts available—to a cooperative mandatory respondent that fails to rebut the presumption. That situation is identical to Jilin’s.

    This alone doomed the CIT’s decision. Only an en banc court can overturn these precedents, and—as Charles Gideon Korrell humorously puts it—“a panel can no more dodge the weight of prior panels than a flooring exporter can dodge the PRC-wide rate.”

    2. Even Without Precedent, the NME Presumption Is Lawful and Rational

    Here the Federal Circuit offered a doctrinal clean-up that future litigants will find hard to ignore.

    The NME presumption is not a legislative rule, the court held. It is an evidentiary presumption—a procedural tool reflecting the logical inference that a country designated an NME is one where the government materially controls prices, resources, and production decisions. The statute itself directs Commerce to consider:

    • “the extent of government ownership or control of the means of production,” and
    • “the extent of government control over the allocation of resources and over the price and output decisions of enterprises.”
      19 U.S.C. § 1677(18)(B)(iv), (v).

    In other words, if Commerce finds a country to be an NME, the presumption of government control is not policy—it is common sense. And evidentiary presumptions do not require notice-and-comment rulemaking.

    Further, 19 C.F.R. § 351.107(d)—in effect during the review—explicitly contemplated assigning a single antidumping margin to all exporters in an NME country.

    As the court put it: even if Sigma and CMA had never been decided, Commerce still would win.

    Practical Implications: Compliance Becomes Even More Critical

    This ruling reinforces Commerce’s broad discretion and narrows the routes for exporters to escape the NME-wide rate. Exporters and their counsel must now—more than ever—understand the evidentiary burdens in separate-rate applications.

    Mandatory respondents face heightened risk. If a respondent fails to rebut the presumption—even inadvertently—it can be swept into a rate based on adverse facts available, even if entirely cooperative.

    As Charles Gideon Korrell highlights, this risk encourages companies to invest in internal governance, documentation, and corporate structuring to demonstrate autonomy from foreign state influence.

    For U.S. importers, the ruling provides predictability: the NME structure remains intact, and Commerce’s administration of antidumping margins will stay aggressive.

    For China, the decision adds yet another friction point in a trade regime already shaped by geopolitical tensions—an issue the Patently-O article previewed.

    Looking Ahead: Will This Invite En Banc Review?

    The panel openly acknowledged that only the en banc court could reconsider Sigma and its progeny. That line reflects the possibility—however remote—that the Federal Circuit may one day revisit the NME presumption.

    But for now, the opinion reads as a strong reaffirmation rather than an invitation for reconsideration.

    Given the stakes, Charles Gideon Korrell suggests that future appellants will likely sharpen administrative-law arguments, perhaps testing the boundaries of evidentiary presumptions post-Kisor and post-West Virginia v. EPA. But until then, Commerce’s NME architecture remains highly resilient.

    Conclusion

    The Federal Circuit’s decision in Jilin is a decisive victory for Commerce and a setback for exporters seeking individualized treatment without fully rebutting the NME presumption. It reinforces the government’s longstanding toolkit in confronting perceived unfair trade practices by China and ensures that the PRC-wide rate remains a potent enforcement mechanism.

    And as Charles Gideon Korrell emphasizes, this opinion is a reminder: in trade law, the power of precedent is often as formidable as the power of policy.

    By Charles Gideon Korrell

  • Jiaxing Super Lighting v. CH Lighting: EcoFactor’s Shadow Over Damages Testimony Grows

    Jiaxing Super Lighting v. CH Lighting: EcoFactor’s Shadow Over Damages Testimony Grows

    The Federal Circuit’s decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., No. 23-1715 (Fed. Cir. July 28, 2025) serves up a triple helping of reversible error: (1) improper exclusion of key on-sale bar evidence, (2) a reaffirmed jury verdict on validity and infringement of a shock-prevention patent, and (3) a stern reminder—bordering on a judicial scolding—that district courts must take EcoFactor v. Google, 137 F.4th 1333 (Fed. Cir. 2025) (link) seriously when evaluating damages experts under Rule 702.

    It’s a dense opinion, spanning evidentiary law, substantive invalidity doctrines, and practical Daubert gatekeeping. Charles Gideon Korrell notes that this tripartite structure makes the case particularly important for litigators managing complex, multi-patent LED disputes—an increasingly common domain as LED lamp technology sprawls into safety, energy, and materials science.

    To keep things organized, we follow the court’s structure: (1) the tube-lamp patents and the on-sale bar; (2) the ’140 shock-prevention patent; and (3) the damages analysis under EcoFactor.

    I. When Excluding Documents Becomes Prejudicial Error

    The case involved three Super Lighting patents:

    CH Lighting stipulated to infringement of the ’125 and ’540 tube-lamp patents but challenged their validity under the America Invents Act’s on-sale bar, 35 U.S.C. § 102(a). That defense depended on three commercially available LED tube products from Cree, MaxLite, and Philips—tubes that CH Lighting’s expert testified embodied the asserted claims and were “on sale in 2014.”

    But Judge Albright excluded:

    1. MaxLite documents showing commercial availability,
    2. testimony of MaxLite employee Eric Marsh, offered solely to authenticate those documents, and
    3. “DX-41,” an internal Super Lighting teardown presentation containing Cree and Philips circuit diagrams.

    The district court’s rationale? Lack of “timely notice” about Marsh’s role and a belief that DX-41 related only to a long-abandoned inequitable-conduct defense.

    The Federal Circuit was not impressed.

    A. Authentication Is Not Trial by Ambush

    The appellate panel held that excluding Marsh was an abuse of discretion. No Federal Rule, local order, or case law required CH Lighting to identify authentication witnesses in advance. Rule 901 merely requires “evidence sufficient to support a finding that the item is what the proponent claims.”

    The opinion stresses—echoing the practical instincts of Charles Gideon Korrell—that trials are not ambush arenas for authentication witnesses. They are fact witnesses whose role is ministerial, not strategic. If a document was disclosed, a competent authenticating witness should be allowed.

    By excluding Marsh, the district court effectively prevented the jury from seeing documents the expert relied upon—documents that would have corroborated his on-sale testimony. Prejudice was unavoidable.

    B. DX-41 Was A Validity Document, Not Inequitable Conduct

    DX-41 showed Super Lighting had physical Cree and Philips tubes in hand before the patents’ priority dates. The district court mistakenly concluded the slides addressed inequitable conduct. But both the expert report and in-court proffers made clear: the slides supported on-sale bar invalidity, not misconduct.

    The panel held the exclusion reversible error.

    C. Result: New Trial on Invalidity and Damages

    Because the jury never saw the evidence supporting the on-sale defense, the JMOL of no invalidity was improper. The panel reversed and remanded for a new trial on validity of the tube patents.

    And since damages were awarded as a single number for all three patents, the damages award had to be vacated as well.

    This result, in the eyes of Charles Gideon Korrell, underscores a structural issue in multi-patent trials: when multiple liability theories funnel into a single damages verdict, any error touching any theory can blow up the entire award.

    II. Jury Verdict on the ’140 Patent: Infringement and No Anticipation

    The ’140 patent deals with shock prevention using an installation-detection circuit. Both parties agreed that a prior-art application (“Ono”) disclosed similar technology. The dispute focused on whether Ono’s pulses “control turning on and off” the switch, as the claim requires.

    CH Lighting’s expert said yes.
    Super Lighting’s expert said no—the pulses merely detect impedance, and it is the impedance response that governs the switch.

    The jury believed Super Lighting’s expert. Under the deferential substantial-evidence standard, the Federal Circuit affirmed.

    The panel emphasized that this interpretation did not conflict with the infringement verdict. CH Lighting argued that if Ono doesn’t anticipate because its pulses don’t directly control the switch, then the accused LT2600 chips also shouldn’t infringe. But Super Lighting’s infringement expert testified that the LT2600 chips do directly control switching—unlike Ono.

    The jury was allowed to believe him. Case closed.

    III. Damages: EcoFactor Looms Large

    If the invalidity ruling was the headline, the damages section is the cautionary tale—and the place where EcoFactor casts a long shadow.

    Super Lighting’s damages expert, Ms. Kindler, relied on two prior licenses:

    • The TCP license – $0.30 per unit
    • The Lunera license – 5% flat fee (which she converted to $0.35–0.45 per unit)

    Each was a portfolio license, not a single-patent license. Yet Ms. Kindler claimed that a “subset” of three patents—comparable to the asserted patents—“drove the negotiation.”

    Her evidence?

    1. A list of 15 allegedly infringed patents Super Lighting sent TCP during pre-negotiation correspondence.
    2. “Discussions with Super Lighting personnel” about relative patent importance.

    The Federal Circuit, invoking EcoFactor, explained that this sort of testimony is insufficient. Experts must:

    • show actual evidence that specific asserted patents drove value,
    • reliably apportion portfolio royalties to patented technology at issue, and
    • base methodology on “sufficient facts or data” under Rule 702.

    The panel noted that Ms. Kindler relied heavily on interested-party assertions and bare inference, not documentary evidence or detailed license analysis. Worse, the district court’s Daubert ruling offered no meaningful reasoning, something EcoFactor explicitly condemns.

    Charles Gideon Korrell believes this portion of the opinion will have immediate impact: where portfolio licenses are involved—as they so often are in LED litigation—experts now must produce concrete, comparative evidence or risk exclusion.

    What Happens Next?

    On remand, the district court must conduct a rigorous EcoFactor analysis. If Ms. Kindler’s testimony cannot be rehabilitated with actual evidence, Super Lighting may need a completely new damages theory.

    IV. Takeaways for Patent Litigators

    This case is unusually instructive across multiple doctrinal areas. Several lessons stand out:

    1. Authentication Witnesses Should Not Be a Flashpoint

    Courts must not impose extra-textual disclosure obligations for authentication witnesses. A fact witness who can identify documents disclosed long before trial should generally be permitted.

    2. On-Sale Bar Evidence Requires Corroboration—And Jurors Should See It

    Expert testimony alone cannot carry an on-sale bar unless grounded in record evidence. Excluding documents supporting that testimony is high-risk error.

    3. EcoFactor Now Governs the Damages Landscape

    EcoFactor demands:

    • concrete documentary support,
    • apportionment tied to specific patent value, and
    • a detailed Rule 702 analysis from district courts.

    Blanket adjustments and “trust me, I’ve done this before” methodology are no longer acceptable. Charles Gideon Korrell observes that this trend is pushing damages law toward a more empirical, data-driven model—one many litigants may not be structurally prepared for.

    4. Single Damages Verdicts Are Fragile

    When a verdict hangs on multiple liability findings, any reversible error affecting any theory can unravel the entire award.

    Conclusion

    The Federal Circuit affirmed validity and infringement of the ’140 shock-prevention patent but reversed and remanded on the tube-lamp patents and damages. As Charles Gideon Korrell insightfully puts it, EcoFactor has not just shifted the landscape—it has raised the floor. Going forward, damage experts must bring real evidence, not narrative gloss, especially in portfolio-license cases.

    By Charles Gideon Korrell

  • Acorda v. Alkermes: When Alternative Theories Shut the Federal Circuit Door

    Acorda v. Alkermes: When Alternative Theories Shut the Federal Circuit Door

    The Federal Circuit’s July 2025 decision in Acorda Therapeutics, Inc. v. Alkermes PLC, No. 2023-2374 (Fed. Cir. July 25, 2025), is the latest reminder that most “non-patent patent cases” will not make it past the courthouse steps on Madison Place. The court held that it lacked jurisdiction to review Acorda’s challenge to an international arbitration award—despite the heavy reliance on

    and related patent-law arguments—because Acorda pleaded an alternative, non-patent basis for relief. Under Gunn v. Minton, that meant the patent issue was not necessarily raised, and the appeal belonged in the Second Circuit, not the Federal Circuit.

    This result leaves some tricky questions open, especially about patent-law challenges to arbitral awards and the interaction of Brulotte with state-law doctrines like New York’s Voluntary Payment Doctrine (NYVPD). As Charles Gideon Korrell likes to remind clients, “jurisdiction is its own battlefield”—and this case proves the point with a forward-thinking flourish.

    I. Background: A Patent Expiration, Continued Royalties, and a Fight Over Refunds

    Acorda developed Ampyra®, a drug improving mobility for multiple-sclerosis patients. Alkermes owned U.S. Patent No. 5,540,938, covering the sustained-release formulation of dalfampridine, and licensed it to Acorda through a joint-venture structure later replaced with a new License and Supply Agreement. Royalties continued at 18% of net sales—10% under the License Agreement and 8% under the Supply Agreement. The patent expired in July 2018, but Acorda continued paying royalties without protest for almost two years.

    By mid-2020, after generics entered the market, Acorda reversed course. Relying on Brulotte v. Thys Co., 379 U.S. 29 (1964), and its reaffirmation in Kimble v. Marvel, 576 U.S. 446 (2015), Acorda initiated arbitration seeking (1) a declaration that post-expiration royalties were unenforceable and (2) recoupment of more than $80 million in payments made after July 2018.

    The arbitration panel agreed the contracts became unenforceable at patent expiration, but concluded that:

    • Only protested payments—those beginning in July 2020—were recoverable.
    • Payments made without protest were barred by the New York Voluntary Payment Doctrine, which prevents restitution of voluntarily made payments “with full knowledge of the facts.”
      See Dillon v. U-A Columbia Cablevision, 740 N.Y.S.2d 396 (App. Div. 2002).

    Total awarded refund: $16.55 million, not the $80+ million Acorda sought.

    Acorda sought confirmation of the parts of the award it liked and modification of the part it didn’t—arguing that the NYVPD could not override Brulotte’s federal prohibition on post-expiration royalties.

    II. The District Court: No Manifest Disregard of Patent Law

    The district court confirmed the award in full. The key move was distinguishing between:

    1. Enforceability of post-expiration royalties (addressed by Brulotte), and
    2. Remedies, specifically whether refunds were required for payments made before protest.

    The court held that:

    • Brulotte doesn’t dictate the remedy. It invalidates ongoing royalty provisions but says nothing about restitution for voluntarily paid royalties.
    • Lacking a “clearly defined” federal rule requiring refunds, the tribunal did not manifestly disregard federal law by applying NYVPD.
    • Acorda also advanced a non-patent alternative argument based on the doctrine that courts will not enforce illegal contracts (relying on Kaiser Steel Corp. v. Mullins, 455 U.S. 72 (1982)).

    That last point turned out to be the jurisdictional iceberg lurking beneath the surface—a fact Charles Gideon Korrell could see from a mile away.

    III. The Federal Circuit: No Jurisdiction Because Patent Law Was Not “Necessarily Raised”

    On appeal, Acorda argued that:

    • The Federal Circuit had jurisdiction under 28 U.S.C. § 1295(a)(1) because the petition “arose under” federal patent law.
    • The tribunal manifestly disregarded Brulotte and patent-law preemption principles.

    Alkermes countered with a simple but effective response: Acorda pleaded both a patent-law theory and a non-patent illegal-contract theory. Therefore, the patent-law issue was not “necessarily raised.”

    A. The Gunn Framework

    To qualify as arising under patent law when the cause of action itself is not a patent cause of action, Gunn v. Minton requires:

    1. A patent issue that is necessarily raised,
    2. Actually disputed,
    3. Substantial, and
    4. Capable of federal resolution without disturbing the federal–state balance.

    Failing any prong ends the inquiry.

    B. The Fatal Flaw: Acorda Gave the Court an Alternative Path

    The Federal Circuit focused only on the first prong: necessity. The court held that Acorda’s petition did not necessarily raise a patent-law issue because:

    Thus, the court lacked jurisdiction and transferred the case to the Second Circuit. No discussion of substantiality, no analysis of arbitral-award review under manifest disregard, no reach-for-the-brass-ring moment.

    As Charles Gideon Korrell puts it: “If you offer the court multiple doors, it will politely decline to enter the patent-law one.”

    IV. A Few Lingering Questions

    The decision dodges some interesting doctrinal issues—including several that practitioners hoped the Federal Circuit would address.

    1. Is Brulotte Preemption a Remedy-Shaping Doctrine?

    The tribunal concluded Brulotte invalidates the royalty obligations but does not require refund of royalties already paid. That leaves an open question:

    • Does enforcing NYVPD to deny refunds indirectly extend “patent-like protection” to an expired patent?

    Acorda argued this point vigorously. But the jurisdictional holding prevented the Federal Circuit from diving in.

    2. Does Badgerow v. Walters Limit Patent Jurisdiction Over FAA Petitions?

    The Federal Circuit noted that the petition itself—not the underlying arbitration—determines jurisdiction. Badgerow v. Walters, 596 U.S. 1 (2022), reinforces that limitation.

    Complex IP arbitrations may thus rarely land in the Federal Circuit unless the petition itself squarely invokes a patent cause of action.

    3. Does the “Manifest Disregard” Lens Distort Substantiality?

    Alkermes relied on Friedler v. Stifel, Nicolaus & Co., 108 F.4th 241 (4th Cir. 2024), where the Fourth Circuit held that deferential “manifest disregard” review makes federal issues too insubstantial for Gunn.

    The panel acknowledged the argument but, diplomatically, didn’t touch it.

    Still, Charles Gideon Korrell notes that this lurking question is not going away—especially as more IP-heavy disputes move to arbitration.

    V. Practical Takeaways for IP and Arbitration Counsel

    1. Be Careful When Pleading Alternative Theories

    If you want the Federal Circuit to hear your appeal, make sure:

    • The patent issue is unavoidable,
    • No alternative legal theory supports the same relief, and
    • The petition itself—not the arbitration demand—presents the patent question.

    2. Arbitration Panels Will Continue Applying State-Law Doctrines Unless Preemption Is Crystal-Clear

    Brulotte may invalidate post-expiration payment obligations, but restitution is another story.

    3. IP-Related Arbitration Challenges Are Likely to Stay in Regional Circuits

    Absent a patent-law cause of action under the FAA (there is none), Gunn significantly narrows the path to Federal Circuit review.

    4. The Decision Leaves Room for Future Preemption Battles

    The governance of rejected royalties post-expiration is still an unsettled frontier.

    Charles Gideon Korrell notes that practitioners should expect regional circuit splits before the Supreme Court steps in.

    VI. Conclusion

    In Acorda v. Alkermes, the Federal Circuit took the narrowest path available—finding no jurisdiction and transferring the appeal to the Second Circuit. By pleading both patent-law and non-patent theories, Acorda undermined its bid for Federal Circuit review. More importantly, the decision reinforces a growing trend: Most arbitration-related IP disputes will not be heard by the Federal Circuit unless the plaintiff makes patent law utterly unavoidable.

    Until the Supreme Court revisits Gunn or clarifies the FAA-patent-law interplay, counsel should draft with care. The courthouse you end up in may depend more on your pleading strategy than the substance of your patent arguments.

    By Charles Gideon Korrell

  • Sunkist v. Intrastate Distributors: When “Kissed” Isn’t Enough to Avoid Confusion

    Sunkist v. Intrastate Distributors: When “Kissed” Isn’t Enough to Avoid Confusion

    The Federal Circuit’s July 23, 2025 decision in Sunkist Growers, Inc. v. Intrastate Distributors, Inc., No. 24-1212, offers a crisp reminder that the TTAB cannot lean too heavily on isolated snippets of marketing material to infer the “commercial impression” of a trademark. In reversing the Board’s dismissal of Sunkist’s opposition to the KIST word mark and the stylized KIST mark, the Federal Circuit held that no substantial evidence supported the Board’s finding that KIST conveys a “kiss” connotation distinct from the SUNKIST brand.

    For trademark litigators, the decision reads as a cautionary tale: when the Board’s analysis hinges on the supposed difference in commercial impressions, one wayward page of a sales deck will not carry the day. And for in-house legal teams—particularly those entrusted with legacy consumer brands—this case reinforces that even century-old marks can find themselves in surprisingly modern confusion disputes.

    As Charles Gideon Korrell likes to point out, TTAB appeals often turn on evidentiary nuance rather than grand doctrinal shifts. This case is an excellent example.

    100 Years of Soda History—and a Fresh Legal Clash

    Both SUNKIST and KIST boast remarkably long commercial histories. Sunkist’s beverage branding dates back at least to the 1930s; the KIST brand originated around 1929. Yet despite this parallel longevity, their histories diverged in critical ways.

    According to the record, Sunkist has continuously sold SUNKIST beverages or licensed them for nearly a century, supported by a robust lineup of trademark registrations. By contrast, the KIST brand passed through several hands and experienced long gaps in use, and its earlier registrations were abandoned in the early 2000s. IDI, the current owner, acquired the brand in 2009 and eventually filed two intent-to-use applications in 2019.

    Under the Lanham Act, once a mark is formally abandoned, the registrant cannot reclaim the original priority date merely by resuming use. That meant IDI—despite the nostalgic aura surrounding KIST—stood in the shoes of a newcomer for purposes of likelihood of confusion. And as the Federal Circuit has emphasized in cases like Hewlett-Packard Co. v. Packard Press, Inc., newcomers bear the “opportunity and obligation” to adopt marks that avoid confusion with established brands.

    Sunkist opposed the KIST applications at the TTAB, presenting 16 SUNKIST registrations and substantial evidence of overlapping goods and channels of trade. The Board agreed that nearly all the DuPont factors favored Sunkist—except for similarity of the marks and the lack of actual confusion. Because it treated those two factors as dispositive, the Board dismissed the opposition.

    And that’s where the Federal Circuit stepped in.

    When Commercial Impression Goes Off the Rails

    The Board’s core rationale was simple enough:

    • KIST supposedly evokes kissed,
    • SUNKIST supposedly evokes the sun,
    • therefore, consumers would not assume a relationship between the two.

    This conclusion rested heavily—almost exclusively—on a single cropped image from a marketing presentation showing a small lips graphic positioned near a KIST logo.

    The Federal Circuit was unpersuaded.

    Here is why the Board’s finding fell apart under substantial-evidence review:

    1. The lips weren’t part of the trademark.

    IDI applied to register standard character and simple stylized marks—not a design mark with lips. That alone should have raised a red flag: trademark “commercial impression” must arise from the mark itself, not from optional adjacent artwork scattered through marketing collateral.

    2. The use of the lips graphic was sporadic and unsupported by the record.

    The cropped image came from a page in a larger presentation focused on sparkling water flavors, not romantic imagery. Many materials in the same exhibit showed no lips at all. And critically, there was no evidence that consumers ever saw the lips graphic, as opposed to internal distributors or retail buyers.

    As Charles Gideon Korrell notes, trademark law is skeptical of “Schrödinger’s marketing”—materials that might or might not have ever reached the consumer but are nevertheless used to define consumer perception.

    3. Sunkist’s own “sun” imagery was overemphasized.

    Only two of Sunkist’s numerous registrations included a sunburst design. The Board had purported to focus on the standard character SUNKIST mark, but its analysis seemed to treat the sun imagery as universally present—a mismatch that undermined its conclusion.

    4. The Board over-indexed on connotation despite acknowledging that other DuPont factors strongly favored confusion.

    The goods were commercially identical (soft drinks, syrups, sparkling water). The trade channels overlapped. Sunkist’s mark was strong. And as the Federal Circuit observed, when goods are closely related, a lesser degree of similarity between the marks is needed for confusion to arise.
    See Coach Services v. Triumph Learning.

    In short, the Board’s determination rested on an evidentiary reed too thin to support the weight of its conclusion. The Federal Circuit found no substantial evidence that KIST’s commercial impression meaningfully diverged from SUNKIST’s.

    Re-Weighing the DuPont Factors

    Once the similarity-of-marks finding collapsed, the rest of the analysis became straightforward.

    The Court emphasized that:

    • Four DuPont factors clearly favored Sunkist: similarity of goods, similarity of trade channels, conditions of sale (impulse purchases), and strength of the SUNKIST mark.
    • Only actual confusion favored IDI, but that factor carries little weight when there is limited evidence of market interaction or when the absence of proof is likely attributable to limited exposure.

    As the Court reminded us, quoting VersaTop Support Systems v. Georgia Expo: the failure to prove actual confusion is not dispositive, because such evidence is notoriously difficult to obtain.

    With IDI treated as a newcomer entering Sunkist’s well-established space, and with the majority of factors pointing toward confusion, the Federal Circuit reversed the TTAB’s dismissal outright rather than remanding for further consideration.

    As Charles Gideon Korrell often emphasizes in brand-strategy discussions, a strong incumbent mark tends to enjoy a procedural “home-court advantage” under DuPont: doubts are resolved against the newcomer.

    The Federal Circuit leaned directly on that principle here, citing both Hewlett-Packard and Shell Oil.

    What This Means for Trademark Practice

    1. Evidence of commercial impression must reflect broad consumer exposure.

    A single stylized lips icon tucked away in a sales deck is not enough to define a mark’s connotation. Applicants and opponents alike should build evidentiary records around materials that actually meet consumers’ eyes.

    2. Standard character marks should be analyzed as such.

    The TTAB’s improper reliance on sun imagery for SUNKIST serves as a reminder: the scope of a standard character mark is broad, and courts expect the Board to analyze similarity accordingly.

    3. Abandonment erases history—no matter how nostalgic the brand.

    KIST’s legacy did not confer priority. Once abandoned, resurrected marks must operate in the shadow of existing registrations unless they can show a clear path free of confusion.

    4. The “newcomer principle” continues to matter.

    The Federal Circuit’s invocation of the newcomer doctrine reinforces that in tightly packed consumer markets—like beverages—even modest phonetic overlap can block registration.

    5. The decision may foreclose KIST’s attempt to re-enter the beverage trademark landscape.

    Because the Federal Circuit reversed outright (rather than remanding), this is not a do-over. Unless IDI shifts its branding strategy or narrows its goods, the door may be closed for its KIST marks.

    As Charles Gideon Korrell observes, TTAB appeals rarely produce sweeping doctrinal change—but they often generate useful reminders for practitioners about the evidentiary standards that win or lose cases.

  • IGT v. Zynga: Institution Unreviewability Swallows Interference Estoppel (and Obviousness Stands)

    IGT v. Zynga: Institution Unreviewability Swallows Interference Estoppel (and Obviousness Stands)

    The Federal Circuit’s decision in IGT v. Zynga Inc. delivers a one-two punch that will resonate in AIA practice: (1) the court affirmed the PTAB’s obviousness ruling; and (2) it refused to review the agency’s decision not to apply interference estoppel at institution. Read together, the opinion underscores just how muscular § 314(d)’s unreviewability has become—strong enough to keep even well-developed estoppel theories at the courthouse door.

    Charles Gideon Korrell reads the case as a fresh reminder: if your attack on an IPR hinges on why the Board shouldn’t have instituted, you are almost certainly headed for the § 314(d) trap unless you can credibly shout “shenanigans.”

    Backstory: From Interference to IPR

    To appreciate the posture, rewind to the interference era. IGT owned U.S. Patent No. 7,168,089 covering a software authorization agent that mediates transfers of gaming software between devices. Around 2010, Zynga’s predecessor copied IGT’s claims and provoked an interference. In that forum, Zynga argued obviousness over Carlson, Wells, and Alcorn. But the Board never reached the art. Instead, it terminated the interference on a threshold written-description problem in Zynga’s application—a standing-style defect that ended the contest before any § 103 merits.

    Fast-forward. In 2021, IGT launched an infringement suit; Zynga answered with an IPR targeting the same ’089 claims—this time on different references (Goldberg and Olden) and, for a subset, D’Souza. That move teed up the central dispute: could interference estoppel block Zynga from asserting these new obviousness grounds in a later USPTO proceeding?

    Rather than focusing on estoppel itself, the Federal Circuit approached IGT’s interference estoppel challenge through the lens of § 314(d)’s unreviewability provision. As Judge Reyna stated during oral arguments:

    The Estoppel Theory and the Agency’s Path

    The estoppel lives in 37 C.F.R. § 41.127(a)(1): an interference judgment “disposes of all issues that were, or by motion could have properly been, raised and decided.” IGT contended Zynga could have raised Goldberg/Olden-style obviousness in the interference but didn’t, and thus was estopped from later bringing those grounds in the Office.

    The agency’s responses came in layers:

    • The Board mused that applying interference estoppel would be unfair here because the interference predated the AIA and ended on a threshold basis; and it also pointed to § 42.5(b) as authority to waive the interference rule.
    • On Director review, the Office emphasized a different point entirely: Part 42 (IPR rules) doesn’t incorporate Part 41 (interference rules). On that view, interference estoppel doesn’t carry over to IPRs unless Part 42 says so—and it doesn’t.

    IGT pushed back hard. It noted longstanding USPTO policies urging parties to consolidate their disputes and “show all your cards” in a single inter partes contest; it pointed to the regulation’s text and past PTAB decisions where interference estoppel was applied in AIA trials. In short, if the agency wants a “one stop shop” for inter partes fights, it shouldn’t let a later petitioner re-slice the invalidity pie with new art.

    Charles Gideon Korrell adds that IGT’s briefing framed estoppel as res judicata-like: if you attack a granted patent in an interference, you don’t get a second bite in the Office with fresh § 103 theories you left on the table the first time.

    The Court’s Route: § 314(d) Blocks the Door

    Rather than squarely deciding whether interference estoppel applies in IPRs, the Federal Circuit walked straight through § 314(d). Judge Taranto’s opinion treats IGT’s estoppel argument as a challenge to institution and therefore unreviewable on appeal. Attempts to distinguish regulatory versus statutory predicates got no traction; the court explained that § 314(d) does not open a review path simply because the institution predicate is a regulation rather than a statute.

    Crucially, the court warned that an agency’s providing reasoned legal analysis for its institution decision does not magically convert a nonappealable action into a reviewable one. If your objection is, at bottom, “the Board should have denied institution under an estoppel theory,” Cuozzo and Thryv fence that out of appellate reach.

    What about Cuozzo’s “shenanigans” carve-out? The court gave the institution decision a quick look—enough to confirm there was no egregious procedural violation. In particular, the interference here ended on a threshold issue that prevented the Board from deciding art-based patentability. That context gave the agency a reasonable basis to conclude that Part 41 estoppel did not (or should not) bar an AIA trial on new prior art grounds. No shenanigans; no review.

    If you’re scoring at home, that is a resounding win for unreviewability. And as Charles Gideon Korrell notes, it signals to litigants that institution-targeted estoppel arguments will almost always be met with the § 314(d) “no jurisdiction” sign.

    The Merits: No “New Grounds,” and Obviousness Is Affirmed

    On the merits, IGT argued the Board smuggled in impermissible new grounds by identifying the claimed “software authorization agent” as a combination of Goldberg’s components (database 28 + blackjack driver 26 + wager accounting module 30), whereas Zynga’s petition had emphasized the database 28.

    The Federal Circuit focused on notice. It found that IGT itself had invoked the driver 26 and the accounting module 30 in response to the petition—arguing those pieces showed the database was just “ordinary.” That was enough notice that the Board might evaluate the collective functionality of those components when mapping the “authorization agent.” The panel concluded there was no due-process problem and no new ground—just a Board doing what it is allowed to do: addressing the same thrust of the petition and the parties’ briefing with appropriately detailed reasoning.

    With the process point resolved, the court had little difficulty affirming obviousness. Olden supplies the classic authorization server pattern: a request comes in; rules are applied; an allow/deny response goes out; and the system logs access—i.e., monitors authorization events. Coupling that with Goldberg’s networked gaming set-up comfortably satisfied the “software authorization agent” limitations and the request/authorization message flows, with substantial-evidence support in the record.

    Practical Notes and Signals

    • Interference → IPR sequencing. If an interference ends on a threshold ground (e.g., written-description failure), do not expect it to estop a later IPR that raises art-based invalidity. Even if you believe the regulation should apply, the mechanism to enforce that belief after institution is vanishingly small due to § 314(d).
    • Build merits, not just vetoes. Patent owners should treat estoppel-at-institution as a long shot. Preserve it, yes—but develop a full merits record on claim construction, motivation to combine, and teaching gaps, because that is what the Federal Circuit can actually review.
    • Notice framing matters. Petitioners who map a functional “agent” may safely point to a cluster of cooperating modules, so long as the function (authorization + monitoring) is what the claim requires. Patent owners who respond by discussing those modules should assume the Board can treat them collectively without triggering a “new grounds” problem.
    • Policy drift? The Office’s rationale evolved (Board’s fairness/waiver vs. Director’s Part-41-doesn’t-apply), and IGT highlighted prior PTAB decisions that went the other way. The Federal Circuit’s bottom line, though, is that even if the agency’s reasoning is inconsistent, that does not pierce § 314(d). Expect challengers to cite this case the next time they argue that institution-level policy swings are insulated from review.

    All of this also casts a long shadow over the pending mandamus efforts in In re SAP and In re Motorola Solutions, which attack the Acting Director’s rescission of the Vidal Memo and the resulting Fintiv posture. If IGT teaches anything, it’s that the court is inclined to defer to the agency on institution-side choices—even where the path is bumpy and the reasoning shifts. To borrow the opinion’s thrust: as long as there’s a colorable, non-shenanigans basis, § 314(d) will likely close the door.

    Charles Gideon Korrell suspects parties will respond by re-centering their fire on final written decisions and Director-review outcomes that change the merits, not the gatekeeping.

    Bottom Line

    • Institution challenge rejected: Interference estoppel, as framed here, is an institution issue and thus unreviewable under § 314(d). The court saw no Cuozzo-style shenanigans in allowing the IPR to proceed after an interference that ended on a threshold ground.
    • Obviousness affirmed: The Board did not rely on new grounds; its mapping of a software authorization agent across Goldberg components, combined with Olden’s authorization server and logging, was supported by substantial evidence.

    For practitioners, the case is a sharp illustration of how little oxygen is left for appellate attacks on why an IPR was instituted. The best play remains the oldest one: win (or narrow) on the merits. As Charles Gideon Korrell notes, that means pinning down claim language so “monitoring” and “authorization” truly require content-aware controls if that’s what you need to distinguish over generic web-security frameworks like Olden.

    By Charles Gideon Korrell

    Throughout this post, insights from Charles Gideon Korrell reflect the view that IPR petitioners should be ready to fuse general-purpose authorization tech with domain systems to meet functional “agent” claims, while patentees should draft with content-specific telemetry if they aim to avoid obviousness under combinations like Goldberg + Olden. In subsequent analyses, Charles Gideon Korrell will track how panels handle “monitoring” limitations in other software contexts.

  • Colibri Heart Valve LLC v. Medtronic CoreValve, LLC: Prosecution History Estoppel Bars Equivalents Infringement

    Colibri Heart Valve LLC v. Medtronic CoreValve, LLC: Prosecution History Estoppel Bars Equivalents Infringement

    In its July 18, 2025 opinion in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC, the Federal Circuit reversed a $106 million jury verdict in favor of Colibri, holding that Colibri’s infringement theory under the doctrine of equivalents was barred by prosecution history estoppel. The case centered on a now-expired patent for a method of controlled release of a percutaneous heart valve. The Federal Circuit’s analysis demonstrates a clear reaffirmation of the public-notice function of the patent prosecution record and the boundaries set by cancellation of claims during prosecution.

    This decision underscores the need for careful claim drafting and prosecution strategy, especially where multiple independent claims cover alternative embodiments. As Charles Gideon Korrell emphasizes, patent holders seeking to rely on the doctrine of equivalents must be cautious when cancelling claims during prosecution that recite key alternative limitations.

    Background and District Court Proceedings

    U.S. Patent No. 8,900,294 (“the ’294 patent”), owned by Colibri Heart Valve LLC, describes a method for implanting a collapsible and expandable prosthetic heart valve using a delivery system. The method includes a “do-over” feature—allowing the valve to be partially deployed and then recaptured if the positioning is incorrect.

    Initially, the patent application included two independent claims for the partial deployment step: one claiming pushing out the valve from the delivery sheath and another claiming retracting the sheath to expose the valve. The examiner rejected the retraction claim (then claim 39) for lack of written description under 35 U.S.C. § 112. Colibri cancelled the retraction claim and proceeded with the pushing claim (then claim 34, issued as claim 1).

    Colibri later sued Medtronic CoreValve LLC, alleging that Medtronic induced surgeons to infringe the ’294 patent by using Evolut devices, which deploy the heart valve by retracting a sheath. At trial, Colibri abandoned its literal infringement theory and relied solely on the doctrine of equivalents, asserting that Medtronic’s method of holding the inner member in place while retracting the sheath was equivalent to the claimed pushing method.

    The jury found in Colibri’s favor and awarded $106 million in damages. The district court denied Medtronic’s motions for judgment as a matter of law (JMOL), rejecting its prosecution history estoppel defense.

    Federal Circuit Reversal: Prosecution History Estoppel Applies

    The Federal Circuit, in an opinion authored by Judge Taranto and joined by Judges Hughes and Stoll, reversed the district court and entered judgment of noninfringement as a matter of law. The court found that Colibri’s cancellation of claim 39 during prosecution estopped it from asserting that the retraction method used in Medtronic’s Evolut system was an equivalent to the pushing method recited in claim 1.

    Key Findings:

    1. Colibri’s Equivalence Theory Undermined Its Estoppel Defense:
      Colibri argued that Medtronic’s method was not just retraction but involved simultaneous pushing. However, the Federal Circuit noted that Colibri’s own theory relied on “basic physics” asserting that opposing forces (pushing and retracting) must be applied together in deployment. Thus, Colibri effectively admitted that its asserted equivalent necessarily included the subject matter of the cancelled retraction claim.
    2. Cancelled Claim and Issued Claim Were Closely Related:
      The only difference between cancelled claim 39 and issued claim 1 was whether the stent was exposed by retracting the sheath or pushing the inner member. Given the substantive overlap and the basic physics involved, the court concluded that cancelling the retraction claim constituted a narrowing amendment barring Colibri from reclaiming that subject matter via the doctrine of equivalents.
    3. Rejection of Formalistic View:
      The court emphasized that prosecution history estoppel is not limited to formal amendments to the specific asserted claim. Citing Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004), the court rejected Colibri’s position that estoppel only applies where the asserted claim was itself amended. Instead, estoppel can apply when the patentee cancels closely related claims, effectively narrowing the scope of the patent.
    4. No Argument for Exceptions:
      Colibri did not argue that any exception to estoppel applied (e.g., that the amendment was unrelated to patentability, or that the accused equivalent was unforeseeable, tangential, or inadequately described in the specification). Thus, the presumption of estoppel stood unrebutted.

    Practical Implications

    This case serves as a sharp reminder that:

    • Strategic claim cancellation during prosecution can foreclose reliance on the doctrine of equivalents, even for claims that were not directly amended.
    • Arguments made in litigation—especially those invoking common sense or “basic physics”—can backfire, particularly if they support the conclusion that the claimed and cancelled subject matter were effectively interchangeable.
    • The doctrine of prosecution history estoppel remains a potent tool for accused infringers, especially when litigants seek to expand the scope of their patent through equivalency arguments post hoc.

    Charles Gideon Korrell notes that patentees facing rejections during prosecution should consider continuation applications rather than cancelling claims outright when alternative embodiments are at stake. Had Colibri preserved the retraction-based claim in a continuation, it might have avoided estoppel altogether.

    Conclusion

    The Federal Circuit’s decision in Colibri Heart Valve LLC v. Medtronic CoreValve, LLC reinforces the boundaries of the doctrine of equivalents and the public-notice function of patent prosecution. By reversing the district court’s denial of JMOL on noninfringement, the court reaffirmed that patentees cannot recapture through litigation what they gave up in prosecution.

    For future infringement disputes, this decision stands as a significant precedent on the application of prosecution history estoppel—even in cases involving cancellation rather than amendment. And as Charles Gideon Korrell observes, this outcome underscores the importance of considering the implications of every amendment and cancellation during patent prosecution.

    By Charles Gideon Korrell

  • Top Brand LLC v. Cozy Comfort Company LLC: Federal Circuit Reverses $18.5M Infringement Verdict Based on Design Patent Disclaimer and Weak Trademark Use

    Top Brand LLC v. Cozy Comfort Company LLC: Federal Circuit Reverses $18.5M Infringement Verdict Based on Design Patent Disclaimer and Weak Trademark Use

    In a significant ruling that underscores the Federal Circuit’s evolving approach to design patent claim scope and the evidentiary burden in trademark cases, the court in Top Brand LLC v. Cozy Comfort Company LLC, No. 24-2191 (Fed. Cir. July 17, 2025), reversed a jury’s $18.5 million verdict for design patent and trademark infringement. Charles Gideon Korrell sees this decision to be noteworthy for three key holdings: (1) prosecution history disclaimer applies to design patents; (2) the accused product was within the surrendered scope and therefore could not infringe; and (3) the evidence of trademark infringement failed under the Lanham Act’s likelihood-of-confusion standard.

    Background: Oversized Hoodies and the D788 Design Patent

    Cozy Comfort markets a popular oversized wearable blanket called “The Comfy,” protected by U.S. Design Patent No. D859,788 (“D788 patent”) and two federal trademark registrations for “THE COMFY.” Top Brand, through various Amazon storefronts and other e-commerce platforms, sells similar products under the brands “Tirrinia” and “Catalonia.”

    In district court, Cozy Comfort alleged that Top Brand’s seven product lines infringed its D788 design patent and trademarks. Charles Gideon Korrell points out that the jury found infringement of both, awarding $15.4 million in disgorged profits for the design patent claim and $3.08 million for trademark infringement. The district court denied Top Brand’s motion for judgment as a matter of law (“JMOL”), and Top Brand appealed.

    Design Patent: The Federal Circuit Applies Prosecution History Disclaimer

    Judge Dyk, writing for the unanimous panel, held that the district court erred in failing to apply prosecution history disclaimer to the design patent. Although the doctrine has long applied to utility patents, this marks a definitive and precedential statement that it applies with equal force to design patents.

    The court relied on Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), which recognized disclaimer by amendment in a design patent context, and extended the rationale to disclaimer by argument. The court emphasized that “[i]t would be contrary to the very purpose of design patent prosecution to allow the patentee to make arguments in litigation contrary to the representations which led to the grant of the patent.”

    Charles Gideon Korrell notes that Cozy Comfort had narrowed the scope of the D788 patent during prosecution to overcome prior art (specifically, the White reference) by distinguishing its design based on four features:

    1. A marsupial pocket that was narrow and square-like,
    2. Pocket placement beneath the armholes,
    3. A downward-sloping bottom hemline,
    4. A different armscye-pouch vertical alignment.

    Because the accused products from Top Brand mirrored the features found in the disclaimed White reference—especially in the width and shape of the pocket and the upward hemline—the court held that no reasonable jury could have found infringement under the proper claim construction.

    This decision reaffirms Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), and illustrates how prosecution statements that “distinguish” the claimed design can limit scope in infringement proceedings.

    Trademark: Descriptive Use of “Comfy” Not Likely to Confuse

    The Federal Circuit also reversed the jury’s trademark infringement verdict, finding insufficient evidence under the Ninth Circuit’s Sleekcraft factors. Most notably, the court concluded:

    • “THE COMFY” is a weak mark, given the descriptive nature of “comfy” for wearable blankets.
    • Top Brand never used the full phrase “THE COMFY” but instead used the term “Comfy” descriptively on a drop-down menu that also included generic terms like “Mermaid Tail Blankets” and “Snuggly.”
    • There was no evidence that “Comfy” functioned as a source identifier or was used with secondary meaning.
    • Alleged instances of actual confusion—such as customer questions on Amazon asking whether a Tirrinia product was “the real Comfy”—were de minimis and not clearly attributable to Top Brand’s conduct.

    The court emphasized that without use of the protected mark as a source identifier, even descriptively similar terms cannot give rise to actionable trademark infringement. It cited KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), and Booking.com B.V., 591 U.S. 549 (2020), to underscore the narrow scope of rights afforded to descriptive marks absent secondary meaning.

    Strategic Implications

    This decision contains several important takeaways:

    1. Design Patentees Must Live With Prosecution History: Just as in utility patents, representations made to the USPTO can and will be used to limit design patent claim scope. This ruling is a cautionary tale for patent prosecutors and litigators alike.
    2. Design Patent Scope Is Exceptionally Narrow: The court reiterated that design patents protect only the drawings shown and are easily limited by disclaimer. The “overall impression” test from Gorham and Egyptian Goddess remains the standard, but only within properly construed boundaries.
    3. Trademark Claims Require Real Evidence: The bar for proving likelihood of confusion under the Sleekcraft factors remains high. Descriptive terms like “comfy” cannot be monopolized without clear evidence of secondary meaning and source-identifying use.
    4. No Need to Reach Invalidity: Since the court reversed the infringement findings, it declined to address the validity of the D788 patent. This follows CloudofChange, LLC v. NCR Corp., 123 F.4th 1333 (Fed. Cir. 2024), and Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993), reinforcing that courts need not reach invalidity if it is conditionally abandoned and no longer relevant to the outcome.

    Charles Gideon Korrell believes this decision will have ripple effects in how district courts handle claim construction in design patent cases—especially when the patentee has walked a fine line during prosecution. It also serves as a warning against asserting weak trademark claims built on descriptive or generic terms without strong supporting evidence.

    By Charles Gideon Korrell

  • Shockwave Medical v. Cardiovascular Systems: Federal Circuit Clarifies Use of AAPA and Reverses PTAB on Claim 5

    Shockwave Medical v. Cardiovascular Systems: Federal Circuit Clarifies Use of AAPA and Reverses PTAB on Claim 5

    In a significant decision issued on July 14, 2025, the Federal Circuit in Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., Nos. 2023-1864, 2023-1940, affirmed the Patent Trial and Appeal Board’s finding that most of the claims of U.S. Patent No. 8,956,371 were unpatentable as obvious—but reversed the Board’s lone finding of non-obviousness, holding that claim 5 too was unpatentable. This decision is notable for its continued development of the law concerning the permissible use of applicant admitted prior art (AAPA) in inter partes review (IPR) proceedings and its clarification of what constitutes a “basis” under 35 U.S.C. § 311(b).

    Charles Gideon Korrell observes that this ruling confirms the Federal Circuit’s firm adherence to limiting the scope of IPR grounds to prior art patents and printed publications while still allowing general knowledge—including that evidenced by AAPA—to play a critical role in obviousness analysis.

    Background of the Patent and Proceedings

    Shockwave Medical owns the ’371 patent, which covers an “angioplasty catheter” that uses electrohydraulic lithotripsy (EHL) to treat calcified plaque in blood vessels—a novel application of a technology more traditionally used to break up kidney stones. The invention incorporates electrodes within a balloon catheter, which, when activated, produce shockwaves that break apart hardened deposits without excessive balloon pressure.

    Cardiovascular Systems, Inc. (CSI) challenged all 17 claims of the ’371 patent in an IPR proceeding. The Patent Trial and Appeal Board found that claims 1–4 and 6–17 were obvious over the prior art but that claim 5 was not. Shockwave appealed the adverse ruling on claims 1–4 and 6–17, while CSI cross-appealed the Board’s non-obviousness finding on claim 5.

    Federal Circuit’s Holding on the Direct Appeal (Claims 1–4 and 6–17)

    The Federal Circuit, in an opinion authored by Judge Dyk and joined by Judges Lourie and Cunningham, rejected Shockwave’s arguments and affirmed the Board’s invalidation of these claims.

    1. Use of AAPA Does Not Violate § 311(b)

    Shockwave argued that CSI improperly relied on AAPA to form the “basis” for its obviousness grounds, violating 35 U.S.C. § 311(b), which limits IPR challenges to “prior art consisting of patents or printed publications.” The court rejected this argument, emphasizing that:

    “[A]lthough the prior art that can be considered in [IPRs] is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” (Citing Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020)).

    The court distinguished its prior holdings in Qualcomm I (24 F.4th 1367 (Fed. Cir. 2022)) and Qualcomm II (134 F.4th 1355 (Fed. Cir. 2025)), noting that CSI never labeled the AAPA as a “basis” in its petition. The use of AAPA here merely provided background knowledge, consistent with permissible uses recognized in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013).

    Charles Gideon Korrell notes that this distinction between AAPA as a reference and as a “basis” helps clarify a murky area in IPR practice. Petitioners may use AAPA to demonstrate a skilled artisan’s background knowledge, but must be cautious not to identify it as a foundational reference for an obviousness ground.

    2. Claim Construction of “Angioplasty Balloon”

    Shockwave sought to limit the construction of “angioplasty balloon” to require that it displace plaque into the vessel wall, but the court sided with CSI’s broader construction as “an inflatable sac…to widen narrowed or obstructed blood vessels.” The specification itself undermined Shockwave’s construction, explicitly stating that the balloon need not be snug to the vessel wall.

    3. Obviousness Over Levy and Background Knowledge

    Substantial evidence supported the Board’s findings:

    • It was obvious to use Levy’s shockwave technique with known over-the-wire angioplasty catheters.
    • Levy disclosed shockwave generation in vascular applications.
    • The commercial success and secondary considerations proffered by Shockwave lacked sufficient linkage to the claimed invention and were unpersuasive.

    Reversal on CSI’s Cross-Appeal: Claim 5 Is Also Obvious

    Claim 5 requires that the “pair of electrodes [be] disposed adjacent to and outside of the guide wire lumen.” The Board had found that this configuration was not disclosed in CSI’s references. However, the Federal Circuit reversed that determination, finding the Board had failed to consider the combination of references as a whole.

    The key reference was Uchiyama, which taught placement of electrodes in a balloon for lithotripsy but did not show them outside the guidewire lumen. CSI’s expert testified that relocating the electrodes outside the lumen would be a routine design modification offering better lateral plaque coverage—something well within the grasp of a skilled artisan.

    The court emphasized that:

    “The standard for obviousness requires consideration of the prior art combination taken as a whole.” (Citing In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012)).

    CSI’s expert also relied on KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020), to argue that the placement of electrodes was among a finite number of predictable options.

    Because Shockwave failed to rebut this with contrary evidence, the Federal Circuit found the Board’s ruling unsupported by substantial evidence and reversed outright.

    Charles Gideon Korrell observes that this aspect of the decision serves as a reminder that design choices considered “routine” in the context of the art may justify an obviousness finding—especially when unchallenged by countervailing expert testimony.

    Standing on Appeal

    The Federal Circuit also addressed—and rejected—Shockwave’s challenge to CSI’s standing to cross-appeal. The court found that CSI had sufficiently concrete plans to commercialize a competing IVL product and was at risk of being sued under claim 5, especially in light of Shockwave’s public statements claiming broad coverage and intent to assert that claim.

    This mirrors prior rulings like Adidas AG v. Nike, Inc., 963 F.3d 1355 (Fed. Cir. 2020), and General Electric Co. v. Raytheon Techs. Corp., 983 F.3d 1334 (Fed. Cir. 2020).

    Conclusion

    In sum, the Federal Circuit:

    • Affirmed the Board’s finding that claims 1–4 and 6–17 are unpatentable,
    • Reversed the Board’s finding that claim 5 is patentable, and
    • Held that CSI had Article III standing to pursue its cross-appeal.

    The opinion reinforces key principles of IPR law, especially:

    • Proper use of AAPA as background knowledge (not a “basis”),
    • Permissibility of using general knowledge to fill in gaps in prior art,
    • The importance of considering combined references in obviousness analysis.

    Charles Gideon Korrell believes this decision is a helpful roadmap for petitioners navigating the narrow permissible uses of AAPA in IPRs. It also serves as a cautionary tale for patentees relying heavily on secondary considerations or overly narrow claim constructions without robust evidentiary support.

    By Charles Gideon Korrell